I.W.S. Nominee Company Limited (I.W.S.), is the owner of the certification mark WOOLMARK, which is registered as a certification mark in Australia and other countries. Because Iranian law does not recognize the registration of certification marks, I.W.S. had registered WOOLMARK as a trademark for textile products only. I.W.S. filed a lawsuit against Iranian company Beh Azin Khazar requesting the cancellation of Beh Azin Khazar’s registration for the identical trademark, WOOLMARK, for a number of goods in several different classes. The case was referred to the Tehran-based Third Branch of Public Courts, which specializes in IP law.
Beh Azin Khazar registered WOOLMARK as a trademark (number 176930) for tomato paste, canned tuna and other canned foods, pasta, rice, beans, sugar and sugar cubes, oil, jelly, pickles, juices, bottled water and packing, distribution and sale services in classes 29, 30, 31, 32 and 35. The lawsuit was brought by I.W.S. on the basis of misleading similarity between the two marks.
I.W.S. claimed that the defendant acted with malice and the intent of linking its business with the plaintiff’s by registering WOOLMARK, which, according to the plaintiff, is a famous certification mark. I.W.S. licenses this trademark to be used by affiliated vendors on their textile products as an assurance that the product conforms to a set of standards enforced by the company. As a result, I.W.S. claimed that ordinary consumers would be misled as to the source and origin of goods sold by Beh Azin Khazar under the WOOLMARK trademark, and that Beh Azin Khazar’s registration of the mark would also cause damage to I.W.S. I.W.S. further argued that WOOLMARK sets standards of wool quality, and therefore use on goods like tomato paste and rice would cause dilution by inspiring distrust among consumers and making the mark unreliable.
Beh Azin Khazar argued that the goods and services of the two companies were different and that the marks were registered in different classes, and therefore requested that I.W.S.’s lawsuit be rejected.
The lower court found that I.W.S. had registered the trademark in Iran in 1963 and had renewed the registration as is legally required, and therefore had exclusive rights over the mark. Because I.W.S. had recently filed an application to add certain goods and classes—the same goods and classes registered by the defendant—Beh Azin Khazar’s later registration of the mark contradicted I.W.S.’s exclusive and prior acquired rights and constituted an obstacle for I.W.S.’s new application for the additional goods and classes, said the court. The court thus found I.W.S.’s claim substantiated and ordered the cancellation of the defendant’s trademark registration.
The Appellate Court, in confirming the ruling of the lower court, further held that the defendant’s action in registering an identical trademark to I.W.S.’s was considered an example of trademark registration with malice.
The cancellation notice was published in the Iranian Official Gazette on December 10, 2014.
The precedent set by these courts prohibits registration of a trademark which is identical or similar to a trademark already registered by another party for other goods and services, provided the original owner wants to amend its registration to include those goods and services.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association